[Federal Register Volume 65, Number 159 (Wednesday, August 16, 2000)]
[Rules and Regulations]
[Pages 50092-50105]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-20744]



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Part III





Department of Commerce





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United States Patent and Trademark Office



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37 CFR Part 1



Request for Continued Examination Practice and Changes to Provisional 
Application Practice; Final Rule

  Federal Register / Vol. 65, No. 159 / Wednesday, August 16, 2000 / 
Rules and Regulations  

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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB13


Request for Continued Examination Practice and Changes to 
Provisional Application Practice

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
revising the rules of practice in patent cases to implement certain 
provisions of the American Inventors Protection Act of 1999. These 
provisions of the American Inventors Protection Act of 1999: Provide 
for continued examination of an application for a fee; extend the 
pendency of a provisional application if the date that is twelve months 
after the filing date of the provisional application falls on Saturday, 
Sunday, or a Federal holiday within the District of Columbia; eliminate 
the copendency requirement for a nonprovisional application to claim 
the benefit of a provisional application; provide for the conversion of 
a provisional application to a nonprovisional application; and provide 
a prior art exclusion for certain commonly assigned patents.

EFFECTIVE DATE: August 16, 2000.

FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Karin L. Tyson, or 
Robert A. Clarke by telephone at (703) 308-6906, or by mail addressed 
to: Box Comments--Patents, Commissioner for Patents, Washington, DC 
20231, or by facsimile to (703) 872-9411, marked to the attention of 
Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 
1999 (Title IV of the Intellectual Property and Communications Omnibus 
Reform Act of 1999 (S. 1948) as introduced in the 106th Congress on 
November 17, 1999) was incorporated and enacted into law on November 
29, 1999, by Sec. 1000(a)(9), Division B, of Pub. L. 106-113, 113 Stat. 
1501 (1999). The American Inventors Protection Act of 1999 contains a 
number of changes to title 35, United States Code. The United States 
Patent and Trademark Office (Office) published an interim rule revising 
the rules of practice to implement the provisions of Secs. 4403, 4801, 
and 4807 of the American Inventors Protection Act of 1999. See Changes 
to Application Examination and Provisional Application Practice, 
Interim Rule, 65 FR 14865 (Mar. 20, 2000), 1233 Off. Gaz. Pat. Office 
47 (Apr. 11, 2000). This notice adopts final changes to the rules of 
practice to implement these provisions of the American Inventors 
Protection Act of 1999.
    Section 4403 of the American Inventors Protection Act of 1999 is 
effective on the date six months after the date of enactment of the 
American Inventors Protection Act of 1999 (May 29, 2000) and applies to 
applications (other than for a design patent) filed on or after June 8, 
1995. Section 4801 of the American Inventors Protection Act of 1999 is 
effective on the date of enactment of the American Inventors Protection 
Act of 1999 (November 29, 1999) and applies to all provisional 
applications (with limited exception) filed on or after June 8, 1995. 
Section 4807 of the American Inventors Protection Act of 1999 is 
effective on the date of enactment of the American Inventors Protection 
Act of 1999 (November 29, 1999) and applies to all applications filed 
on or after November 29, 1999.
    Section 4403 (Continued Examination of Patent Applications): 
Section 4403 of the American Inventors Protection Act of 1999 amends 35 
U.S.C. 132 to state that the Office ``shall prescribe regulations to 
provide for the continued examination of applications for patent at the 
request of the applicant,'' and that the Office ``may establish 
appropriate fees for such continued examinations and shall provide a 50 
percent reduction in such fees for small entities that qualify for 
reduced fees under [35 U.S.C. 41(h)(1)].'' Previously, an applicant had 
to file a continuing application (a continuing application under 
Sec. 1.53(b) or a continued prosecution application under Sec. 1.53(d)) 
to obtain continued examination of an application for a fee (the 
application filing fee). Section 4403 of the American Inventors 
Protection Act of 1999 will provide statutory authority for the 
continued examination of an application for a fee (to which the small 
entity reduction will be applicable) without requiring the applicant to 
file a continuing application.
    Section 4801 (Provisional Applications): Section 4801(a) of the 
American Inventors Protection Act of 1999 amends 35 U.S.C. 111(b)(5) to 
provide that ``[n]otwithstanding the absence of a claim, upon timely 
request and as prescribed by the Director, a provisional application 
may be treated as an application filed under [35 U.S.C. 111(a)]'' but 
that if ``no such request is made, the provisional application shall be 
regarded as abandoned 12 months after the filing date of such 
application and shall not be subject to revival * * *.'' Thus, 
Sec. 1.53(c) is amended to provide both for the conversion of a 
provisional application (35 U.S.C. 111(b) and Sec. 1.53(c)) to a 
nonprovisional application (35 U.S.C. 111(a) and Sec. 1.53(b)), and for 
the conversion of a nonprovisional application (35 U.S.C. 111(a) and 
Sec. 1.53(b)) to a provisional application (35 U.S.C. 111(b) and 
Sec. 1.53(c)).
    Section 4801 of the American Inventors Protection Act of 1999 
contains no provision for according the resulting nonprovisional 
application a filing date other than the original filing date of the 
provisional application. Thus, under the patent term provisions of 35 
U.S.C. 154, the term of a nonprovisional application resulting from the 
conversion of a provisional application pursuant to 35 U.S.C. 111(b)(5) 
will be measured from the original filing date of the provisional 
application (which is the filing date accorded the nonprovisional 
application resulting from conversion under Sec. 4801 of the American 
Inventors Protection Act of 1999). Applicants are strongly cautioned to 
consider the patent term implications of converting a provisional 
application into a nonprovisional application pursuant to 35 U.S.C. 
111(b)(5), rather than simply filing a nonprovisional application 
within twelve months of the provisional application's filing date and 
claiming the benefit of the provisional application under 35 U.S.C. 
119(e).
    Section 4801(b) of the American Inventors Protection Act of 1999 
also amends 35 U.S.C. 119(e) to provide that ``[i]f the day that is 12 
months after the filing date of a provisional application falls on a 
Saturday, Sunday, or Federal holiday within the District of Columbia, 
the period of pendency of the provisional application shall be extended 
to the next succeeding secular or business day.''
    Section 4801(c) of the American Inventors Protection Act of 1999 
also amends 35 U.S.C. 119(e) to eliminate the requirement that a 
provisional application be pending on the filing date of the 
nonprovisional application for the nonprovisional application to claim 
the benefit of the provisional application.
    Section 4807 (Prior Art Exclusion): 35 U.S.C. 103 was amended in 
1984 to exclude subject matter developed by another person which 
qualifies as prior art only under 35 U.S.C. 102(f) or (g) as prior art 
under 35 U.S.C. 103 against a claimed invention, provided that the 
subject matter and the claimed invention were commonly owned by the

[[Page 50093]]

same person or organization or subject to an obligation of assignment 
to the same person or organization at the time the claimed invention 
was made. See Pub. L. 98-622, Sec. 103, 98 Stat. 3384 (1984). Section 
4807 of the American Inventors Protection Act of 1999 amends 35 U.S.C. 
103(c) to exclude subject matter developed by another person which 
qualifies as prior art only under one or more of 35 U.S.C. 102(e), (f), 
or (g) as prior art under 35 U.S.C. 103 against a claimed invention, 
provided that the subject matter and the claimed invention were 
commonly owned by the same person or organization or subject to an 
obligation of assignment to the same person or organization at the time 
the claimed invention was made. The Office has published guidelines 
concerning the implementation of this change to 35 U.S.C. 103(c). See 
Guidelines Concerning the Implementation of Changes to 35 U.S.C. 102(g) 
and 103(c) and the Interpretation of the Term ``Original Application'' 
in the American Inventors Protection Act of 1999, 1233 Off. Gaz. Pat. 
Office 54 (Apr. 11, 2000).
    Discussion of Specific Rules: The Office is adopting the changes 
set forth in the Interim Rule to Secs. 1.7, 1.17(e) and (i), 
1.53(d)(1), 1.78(a)(3), 1.97(b), 1.104(c)(4), 1.113, 1.116, 1.198, 
1.312, and 1.313(a), (b), (c)(1), (c)(3), and (d) in this final rule. 
The Office is adopting revised Secs. 1.53(c)(3), 1.103, 1.114, and 
1.313(a) and (c)(2) in this final rule.
    Title 37 of the Code of Federal Regulations, Part 1, is amended as 
follows:
    Section 1.7 is amended by designating the current text as paragraph 
(a) and adding a new paragraph (b) to provide that if the day that is 
twelve months after the filing date of a provisional application under 
35 U.S.C. 111(b) and Sec. 1.53(c) falls on Saturday, Sunday, or a 
Federal holiday within the District of Columbia, the period of pendency 
shall be extended to the next succeeding secular or business day which 
is not a Saturday, Sunday, or a Federal holiday.
    Section 1.17(e) sets forth the fee to request continued examination 
pursuant to new Sec. 1.114, which is set at an amount equal to the 
basic filing fee for a utility application. Therefore, the fee for 
considering a submission pursuant to Sec. 1.114 is currently $690.00 
($345.00 for a small entity).
    Section 1.17(i) is amended to include a reference to the fee to 
convert a provisional application filed under Sec. 1.53(c) to a 
nonprovisional application under Sec. 1.53(b), and to eliminate the 
reference to Sec. 1.312.
    Section 1.53 is amended by redesignating paragraph (c)(3) as 
paragraph (c)(4) and adding a new paragraph (c)(3) to provide for the 
conversion of a provisional application to a nonprovisional 
application. Section 1.53(c)(3) provides that a request to convert a 
provisional application filed under Sec. 1.53(c) to a nonprovisional 
application under Sec. 1.53(b) must be accompanied by the fee set forth 
in Sec. 1.17(i) and an amendment including at least one claim as 
prescribed by the second paragraph of 35 U.S.C. 112, unless the 
provisional application otherwise contains at least one claim. Section 
1.53(c)(3) also provides that such a request must be filed prior to the 
earliest of: (1) abandonment of the provisional application; or (2) 
expiration of twelve months after the filing date of the provisional 
application.
    Section 1.53(c)(3) also provides that the nonprovisional 
application resulting from conversion of a provisional application must 
also include the filing fee for a nonprovisional application, an oath 
or declaration by the applicant pursuant to Secs. 1.63, 1.162, or 
1.175, and the surcharge required by Sec. 1.16(e) if either the basic 
filing fee for a nonprovisional application or the oath or declaration 
was not present on the filing date accorded the resulting 
nonprovisional application. While this language was not included in 
interim Sec. 1.53(c)(3), it simply clarifies that once a provisional 
application is converted into a nonprovisional application, the 
resulting nonprovisional application must comply with the requirements 
applicable to nonprovisional applications (e.g., the requirement for 
the basic filing fee for a nonprovisional application and an oath or 
declaration by the applicant pursuant to Secs. 1.63, 1.162, or 1.175).
    Section 1.53(c)(3) also provides that the conversion of a 
provisional application to a nonprovisional application will not result 
in either the refund of any fee properly paid in the provisional 
application or the application of any such fee to the filing fee, or 
any other fee, for the nonprovisional application.
    Finally, Sec. 1.53(c)(3) contains the admonitions that: (1) 
conversion of a provisional application to a nonprovisional application 
under Sec. 1.53(c)(3) will result in the term of any patent to issue 
from the application being measured from at least the filing date of 
the provisional application for which conversion is requested; and (2) 
applicants should consider avoiding this adverse patent term impact by 
filing a nonprovisional application claiming the benefit of the 
provisional application under 35 U.S.C. 119(e) (rather than converting 
the provisional application into a nonprovisional application pursuant 
to Sec. 1.53(c)(3)).
    The conversion of a provisional application to a nonprovisional 
application will not result in any savings in filing fees over the 
filing of a nonprovisional application claiming the benefit under 35 
U.S.C. 119(e) and Sec. 1.78 of the earlier provisional application. 
Thus, an applicant may simply file a nonprovisional application 
claiming the benefit under 35 U.S.C. 119(e) and Sec. 1.78 of the 
earlier provisional application and avoid the fee set forth in 
Sec. 1.17(i) required to convert a provisional application to a 
nonprovisional application (as well as the adverse patent term effects 
discussed above).
    Section 1.53(d)(1)(i) is amended to provide that continued 
prosecution application (CPA) practice under Sec. 1.53(d) does not 
apply to applications (other than design) if the prior application has 
a filing date on or after May 29, 2000. Thus, an application (except 
for a design application) must have an actual filing date before May 
29, 2000, for the applicant to be able to file a CPA of that 
application. While the Office uses the filing date (and application 
number) of the prior application of a CPA for identification purposes, 
the filing date of a CPA under Sec. 1.53(d) is the date the request for 
a CPA is filed. See Sec. 1.53(d)(2). Thus, if a CPA of an application 
(other than for a design patent) is filed on or after May 29, 2000, 
Sec. 1.53(d)(1)(i) does not permit the filing of a further CPA, 
regardless of the filing date of the prior application as to the first 
CPA (i.e., the filing date used for identification purposes for the 
CPA).
    In the event that an applicant files a request for a CPA of a 
utility or plant application that was filed on or after May 29, 2000 
(to which CPA practice no longer applies), the Office will 
automatically treat the improper CPA as a request for continued 
examination of the prior application (identified in the request for 
CPA) under new Sec. 1.114 (unless the application has issued as a 
patent). If an applicant files a request for a CPA of an application to 
which CPA practice no longer applies and does not want the request for 
a CPA to be treated as a request for continued examination under 
Sec. 1.114 (e.g., the CPA is a divisional CPA), the applicant may file 
a petition under Sec. 1.53(e) requesting that the improper CPA be 
converted to an application under Sec. 1.53(b). The requirements for 
such a petition under Sec. 1.53(e) are identical to those set forth in 
section 201.06(b) of the Manual of Patent Examining Procedure (7th 
ed.1998) (Rev. 1, Feb. 2000) (MPEP) for

[[Page 50094]]

converting an improper file wrapper continuing (FWC) application under 
former Sec. 1.62 to an application under Sec. 1.53(b). The Office will 
not grant such a petition unless it is before the appropriate deciding 
official before an Office action has been mailed in response to the 
request for continued examination under Sec. 1.114 (as the improper CPA 
is being treated). If an Office action has been mailed in response to 
the request for continued examination under Sec. 1.114, the applicant 
should simply file an application under Sec. 1.53(b) within the period 
for reply to such Office action.
    If, however, an applicant files a transmittal paper that is 
ambiguous as to whether it is a continued prosecution application under 
Sec. 1.53(d) or a request for continued examination under Sec. 1.114 
(e.g., contains references to both an RCE and a CPA), and the 
application is eligible for either a continued prosecution application 
under Sec. 1.53(d) or a request for continued examination under 
Sec. 1.114 (i.e., a plant or utility application filed on or after June 
8, 1995, but before May 29, 2000), that ambiguity will be resolved in 
favor of treating the transmittal papers as a request for a CPA under 
Sec. 1.53(d). Other papers filed with the transmittal paper (e.g., a 
preliminary amendment or information disclosure statement) will not be 
taken into account in determining whether a transmittal paper is a 
continued prosecution application under Sec. 1.53(d), or a request for 
continued examination under Sec. 1.114, or ambiguous as to whether it 
is a continued prosecution application under Sec. 1.53(d) or a request 
for continued examination under Sec. 1.114.
    Section 1.53(d)(1)(ii)(A) is amended to refer to ``Sec. 1.313(c)'' 
rather than ``Sec. 1.313(b)(5)'' for consistency with the change to 
Sec. 1.313.
    Section 1.78 is amended to eliminate the requirement that a 
nonprovisional application be ``copending'' with a provisional 
application for the nonprovisional application to claim the benefit 
under 35 U.S.C. 119(e) of a provisional application. Section 1.78 is 
also amended to require that, for a nonprovisional application to claim 
the benefit of a provisional application, the provisional application 
must be entitled to a filing date as set forth in Sec. 1.53(c), and 
have paid the basic filing fee set forth in Sec. 1.16(k) within the 
time period set forth in Sec. 1.53(g), and have any required English 
language translation filed within the time period set under 
Sec. 1.52(d).
    Section 1.97(b) is amended to indicate that an information 
disclosure statement will also be considered if it is filed before the 
mailing of a first Office action after the filing of a request for 
continued examination under Sec. 1.114.
    Section 1.103 is amended to provide for a limited suspension of 
action after a request for continued examination under Sec. 1.114. 
Section 1.103 is also amended based upon previously proposed changes to 
that section. See Changes to Implement the Patent Business Goals, 
Notice of Proposed Rulemaking, 64 FR 53772, 53799-00, 53833-34, (Oct. 
4, 1999), 1228 Off. Gaz. Pat. Office 15, 39-40, 72 (Nov. 2, 1999) 
(Patent Business Goals Notice of Proposed Rulemaking). These changes 
are being adopted in this final rule because of the overlap between the 
provisions for a limited suspension of action after a request for 
continued examination under Sec. 1.114 and the previously proposed 
limited suspension of action in a CPA under Sec. 1.53(d).
    The heading of Sec. 1.103 is amended to add the phrase ``by the 
Office'' to clarify that Sec. 1.103 applies only to suspension of 
action by the Office (by applicant request or at the initiative of the 
Office) and does not apply to a suspension of action (or reply) by the 
applicant.
    Section 1.103(a) provides for suspension of action for cause. 
Specifically, Sec. 1.103(a) provides that on request of the applicant, 
the Office may grant a suspension of action by the Office under this 
paragraph for good and sufficient cause. Section 1.103(a) also provides 
that: (1) The Office will not suspend action if reply by applicant to 
an Office action is outstanding; and (2) any petition for suspension of 
action under Sec. 1.103(a) must specify a period of suspension not 
exceeding six months. Section 1.103(a) specifically provides that any 
petition for suspension of action under Sec. 1.103(a) must also 
include: (1) A showing of good and sufficient cause for suspension of 
action; and (2) the fee set forth in Sec. 1.17(h), unless such cause is 
the fault of the Office.
    Section 1.103(b) provides for a limited suspension of action in a 
CPA filed under Sec. 1.53(d). Section 1.103(b) specifically provides 
that on request of the applicant, the Office may grant a suspension of 
action by the Office under Sec. 1.103(b) in a CPA for a period not 
exceeding three months. Section 1.103(b) also provides that any request 
for suspension of action under Sec. 1.103(b) must be filed with the 
request for a CPA and include the processing fee set forth in 
Sec. 1.17(i).
    Section 1.103(c) provides for a limited suspension of action after 
a request for continued examination under Sec. 1.114. Section 1.103(c) 
specifically provides that on request of the applicant, the Office may 
grant a suspension of action by the Office under Sec. 1.103(c) after 
the filing of a request for continued examination in compliance with 
Sec. 1.114 for a period not exceeding three months. Since Sec. 1.103(c) 
requires a request for continued examination in ``compliance with 
Sec. 1.114,'' a request for suspension of action under Sec. 1.103(c) 
does not substitute for the submission (or fee) required by Sec. 1.114. 
The period of suspension, however, may be used to prepare and file a 
supplement (e.g., affidavit or declaration containing test data) to the 
previously filed submission. Section 1.103(c) also provides that any 
request for suspension of action under Sec. 1.103 must be filed with 
the request for continued examination under Sec. 1.114, specify the 
period of suspension, and include the processing fee set forth in 
Sec. 1.17(i). The ability to submit a request for suspension when a 
request for continued examination under Sec. 1.114 is filed is 
particularly useful in that its fee (unlike the CPA filing fee) must be 
paid when the request for continued examination under Sec. 1.114 is 
filed.
    Section 1.103(d) provides that the Office will notify applicant if 
the Office, on its own initiative, suspends action on an application.
    Section 1.103(e) provides for suspension of action for public 
safety or defense. Section 1.103(e) specifically provides that the 
Office may suspend action by the Office by order of the Commissioner if 
the following conditions are met: (1) The application is owned by the 
United States; (2) publication of the invention may be detrimental to 
the public safety or defense; and (3) the appropriate department or 
agency requests such suspension.
    Section 1.103(f) provides that the Office will suspend action by 
the Office for the entire pendency of an application if the Office has 
accepted a request to publish a statutory invention registration in the 
application, except for purposes relating to patent interference 
proceedings under Subpart E.
    Section 1.104(c)(4) is revised to replace ``35 U.S.C. 102(f) or 
(g)'' with ``35 U.S.C. 102(e), (f) or (g)'' for consistency with 35 
U.S.C. 103(c) as amended by Sec. 4807 of the American Inventors 
Protection Act of 1999.
    Section 1.113 is amended to take into account that an applicant's 
after final reply options include filing a request for continued 
examination under Sec. 1.114. Section 1.113 is also amended to locate 
the last two sentences of paragraph (a) in a new paragraph (c).

[[Page 50095]]

    Section 1.114 is added to implement Sec. 4403 of the American 
Inventors Protection Act of 1999. The Office is providing a procedure 
under which an applicant may obtain continued examination of an 
application in which prosecution is closed (e.g., the application is 
under a final rejection or a notice of allowance) by filing a 
submission and paying a specified fee. If a subsequent rejection or 
action is made final (or if the application is subsequently allowed), 
the applicant may again obtain continued examination of an application 
(consideration of a submission) upon the filing of a submission and an 
additional payment of the specified fee prior to abandonment of the 
application.
    Since the relevant portion of Sec. 4405(b)(1) of the American 
Inventors Protection Act of 1999 (the effective date provision for 35 
U.S.C. 132(b)) states that continued examination provisions of 35 
U.S.C. 132(b) apply to ``all applications'' filed under 35 U.S.C. 
111(a) on or after June 8, 1995, the continued examination provisions 
of 35 U.S.C. 132(b) and Sec. 1.114 apply to any nonprovisional (35 
U.S.C. 111(a)) application filed on or after June 8, 1995, regardless 
of whether the application is a reissue application or a non-reissue 
(original) application. The continued examination provisions of 35 
U.S.C. 132(b) and Sec. 1.114, however, will not be available for: (1) A 
provisional application (which is not examined under 35 U.S.C. chapter 
12); (2) an application for a utility or plant patent (whether reissue 
or non-reissue) filed under 35 U.S.C. 111(a) before June 8, 1995; (3) 
an international application filed under 35 U.S.C. 363 before June 8, 
1995; (4) an application for a design patent; or (5) a patent under 
reexamination.
    Under this procedure, the filing of a request for continued 
examination after the filing of a Notice of Appeal to the Board of 
Patent Appeals and Interferences, but prior to a decision on the 
appeal, will be considered a request to withdraw the appeal and to 
reopen prosecution of the application before the examiner. The filing 
of a request for continued examination (accompanied by the fee and a 
submission) after a decision by the Board of Patent Appeals and 
Interferences, but before the filing of a Notice of Appeal to the U.S. 
Court of Appeals for the Federal Circuit (Federal Circuit) or the 
commencement of a civil action, will also result in the finality of the 
rejection or action being withdrawn and the submission being 
considered.
    In addition to the res judicata effect of a Board of Patent Appeals 
and Interferences decision in an application (see MPEP 706.03(w)), a 
Board of Patent Appeals and Interferences decision in an application is 
the ``law of the case,'' and is thus controlling in that application 
and any subsequent related application. See MPEP 1214.01 (where a new 
ground of rejection is entered by the Board of Patent Appeals and 
Interferences pursuant to Sec. 1.196(b), argument without either 
amendment of the claims so rejected or the submission of a showing of 
facts can only result in a final rejection of the claims, since the 
examiner is without authority to allow the claims unless amended or 
unless the rejection is overcome by a showing of facts not before the 
Board of Patent Appeals and Interferences). As such, a submission 
containing arguments without either amendment of the rejected claims or 
the submission of a showing of facts will not be effective to remove 
such rejection.
    The procedure set forth in Sec. 1.114 will not be available in an 
application after the filing of a Notice of Appeal to the Federal 
Circuit or the commencement of a civil action, unless the appeal or 
civil action is terminated and the application is still pending. Unless 
an application contains allowed claims (or the court's mandate clearly 
indicates that further action is to be taken in the Office), the 
termination of an unsuccessful court appeal or civil action results in 
the abandonment of the application. See MPEP 1216.01.
    If the application is under final rejection, the fee for a request 
for continued examination acts only to withdraw the finality of an 
Office action. If reply to an Office action is outstanding, a 
submission meeting the reply requirements of Sec. 1.111 must be timely 
received to continue prosecution of an application. Put simply, the 
mere payment of the fee for a request for continued examination will 
not operate to toll the running of any time period set in the previous 
Office action for reply to avoid abandonment of the application. 
Likewise, filing a request for continued examination (with the fee and 
a submission) in an allowed application after the issue fee has been 
paid without a petition under Sec. 1.313 to withdraw the application 
from issue will not operate to avoid issuance of the application as a 
patent. Nevertheless, if a request for continued examination (with the 
fee and a submission) is filed in an allowed application prior to 
payment of the issue fee, a petition under Sec. 1.313 to withdraw the 
application from issue is not required.
    To avoid confusion as to whether an applicant desires to amend the 
application prior to receiving continued examination of the 
application, an appeal brief under Sec. 1.192 or a reply brief under 
Sec. 1.193(b), or related submissions, are expressly excluded as a 
submission for the purposes of Sec. 1.114. The submission, however, may 
consist of the arguments in a previously filed appeal brief or reply 
brief submitted as a reply to the final rejection, or may simply 
consist of a submission that incorporates by reference the arguments in 
a previously filed appeal brief or reply brief.
    35 U.S.C. 132(a) provides that ``[n]o amendment shall introduce new 
matter into the disclosure of the invention.'' Any amendment entered 
pursuant to Sec. 1.114 that is determined to contain new matter will be 
treated in the same manner that a reply under Sec. 1.111 that is 
determined to contain new matter is currently treated. In those 
instances in which an applicant seeks to add new matter to the 
disclosure of an application, the procedure in Sec. 1.114 is not 
available, and the applicant must file a continuation-in-part 
application under Sec. 1.53(b) containing such new matter. In addition, 
as 35 U.S.C. 132(b) and Sec. 1.114 provide continued examination of an 
application (and not examination of a continuing application), the 
Office will not permit an applicant to obtain continued examination on 
the basis of claims that are independent and distinct from the claims 
previously claimed and examined (see Sec. 1.145).
    The request for continued examination procedure in Sec. 1.114 
should not be confused with the transitional procedure for the further 
limited examination of patent applications set forth in Sec. 1.129(a) 
(see Changes to Implement 20-Year Patent Term and Provisional 
Applications, Final Rule Notice, 60 FR 20195 (April 25, 1995), 1174 
Off. Gaz. Pat. Office 15 (May 2, 1995)) or the CPA procedure set forth 
in Sec. 1.53(d) (see Changes to Patent Practice and Procedure, Final 
Rule Notice, 62 FR 53131 (October 10, 1997), 1203 Off. Gaz. Pat. Office 
63 (October 21, 1997)).
    Comparison of the request for continued examination procedure in 
Sec. 1.114 with the transitional procedure for the further limited 
examination of patent application set forth in Sec. 1.129(a): The 
procedure set forth in this notice does not apply to any application 
that was filed prior to June 8, 1995. The transitional procedure set 
forth in Sec. 1.129(a) applies only to applications, other than for a 
reissue or design patent, that have been pending for at least two years 
as of June 8, 1995, taking into account any references in such 
applications to any earlier filed

[[Page 50096]]

application under 35 U.S.C. 120, 121, or 365(c), and is not applicable 
to any application filed after June 8, 1995. Therefore, an application 
eligible for the transitional procedure set forth in Sec. 1.129(a) 
(unless filed on June 8, 1995), or any application filed before June 8, 
1995, is not eligible for the procedure for continued examination set 
forth in this notice.
    In addition, an applicant in an application eligible for the 
procedure for continued examination set forth in this notice is not 
limited in the number of times the fee for continued examination may be 
submitted. An applicant in an application eligible for the transitional 
procedure set forth in Sec. 1.129(a), however, is limited to two 
opportunities to pay the fee for further examination of the 
application.
    Moreover, under the transitional procedure set forth in 
Sec. 1.129(a), a submission after final rejection or action will be 
considered if the submission and the requisite fee are filed prior to 
abandonment of the application and prior to the filing of an appeal 
brief. Under the request for continued examination procedure set forth 
in this notice, a submission will be considered if the submission and 
the requisite fee is filed prior to abandonment of the application. 
That is, under the request for continued examination procedure, a 
submission (and requisite fee) need not be filed prior to the filing of 
an appeal brief. In addition, under the request for continued 
examination procedure, a submission will be considered in an allowed 
application if the submission and the requisite fee are filed prior to 
payment of the issue fee (or later if a petition under Sec. 1.313(c) to 
withdraw the application from issue is granted).
    Comparison of the request for continued examination procedure in 
Sec. 1.114 with the CPA procedure set forth in Sec. 1.53(d): Section 
1.53(d) is amended to make CPA practice inapplicable to applications 
(other than for a design patent) filed under 35 U.S.C. 111(a) on or 
after May 29, 2000, or resulting from international applications filed 
under 35 U.S.C. 363 on or after May 29, 2000. Continued prosecution 
application (CPA) practice was adopted to permit applicants to obtain 
continued examination of an application (for a fee) via the filing of a 
continuing application. 35 U.S.C. 132(b), however, provides statutory 
authority for the Office to prescribe regulations to permit applicants 
to obtain continued examination of an application (for a fee) without 
the need for a continuing application. The Office is not completely 
abolishing CPA practice in favor of the request for continued 
examination practice in Sec. 1.114 because the request for continued 
examination practice in Sec. 1.114 is not applicable to applications 
filed before June 8, 1995 (or design applications), and the patent term 
adjustment provisions of Pub. L. 106-113 do not apply to applications 
filed before May 29, 2000. The Office, however, is restricting CPA 
practice to utility and plant applications filed before May 29, 2000, 
and design applications because maintaining two practices (as to 
applications eligible for the continued examination procedure of 
Sec. 1.114) designed for the same purpose (obtaining continued 
examination of an application) is unnecessary and will result in 
confusion.
    Since the request for continued examination practice in Sec. 1.114 
is applicable to utility and plant applications filed on or after June 
8, 1995, and CPA practice in Sec. 1.53(d) is applicable to utility and 
plant applications filed before May 29, 2000, and design applications, 
an applicant in a utility or plant application filed on or after June 
8, 1995, but before May 29, 2000, may obtain further examination either 
by filing a request for continued examination under Sec. 1.114 or by 
filing a CPA under Sec. 1.53(d). Since the patent term adjustment 
provisions of Pub. L. 106-113 do not apply to applications filed before 
May 29, 2000, and a request for continued examination practice under 
Sec. 1.114 (unlike a CPA under Sec. 1.53(d)) is not the filing of a new 
application, whether further examination of such an application is 
sought by a request for continued examination under Sec. 1.114 or a CPA 
under Sec. 1.53(d) has an impact on whether any resulting patent is 
entitled to the patent term adjustment provisions of Pub. L. 106-113. 
Specifically, if an applicant in a utility or plant application filed 
before May 29, 2000, files a CPA under Sec. 1.53(d) after May 29, 2000, 
the application being prosecuted (now a CPA) is an application filed on 
or after May 29, 2000, and is entitled to the patent term adjustment 
provisions of Pub. L. 106-113. If, however, an applicant in a utility 
or plant application filed before May 29, 2000 (but on or after June 8, 
1995) files a request for continued examination under Sec. 1.114, the 
application being prosecuted is not an application filed on or after 
May 29, 2000, and is not entitled to the patent term adjustment 
provisions of Pub. L. 106-113.
    In addition, there are a number of additional differences between 
request for continued examination procedure set forth in this notice 
with the CPA procedure set forth in Sec. 1.53(d) resulting from the 
fact that a CPA is the filing of a new application, whereas continued 
examination under Sec. 1.114 merely continues the examination of the 
same application: (1) A request for continued examination under 
Sec. 1.114 is not permitted unless prosecution in the application is 
closed (cf. Sec. 1.53(d)(1)); (2) the fee for continued examination 
under Sec. 1.114 (Sec. 1.17(e)) does not have an additional claims fee 
component (cf. 1.53(d)(3)(ii)); (3) the fee for continued examination 
under Sec. 1.114 may not be deferred (cf. Sec. 1.53(f)); (4) a request 
for continued examination under Sec. 1.114 is entitled to the benefit 
of a certificate of mailing under Sec. 1.8 (cf. 1.8(a)(2)(i)(A)); (5) 
an applicant may not obtain examination of a different or non-elected 
invention (e.g., a divisional) in a request for continued examination 
under Sec. 1.114; and (6) any change of inventors must be via the 
procedure set forth in Sec. 1.48 (cf. 1.53(d)(4)).
    Discussion of the specific provisions of new Sec. 1.114: Section 
1.114 is added to provide for continued examination of an application 
under 35 U.S.C. 132(b).
    Section 1.114(a) provides that if prosecution in an application is 
closed, an applicant may obtain continued examination of an application 
by filing a submission and the fee set forth in Sec. 1.17(e) prior to 
the earliest of: (1) Payment of the issue fee, unless a petition under 
Sec. 1.313 is granted; (2) abandonment of the application; or (3) the 
filing of a notice of appeal to the U.S. Court of Appeals for the 
Federal Circuit under 35 U.S.C. 141, or the commencement of a civil 
action under 35 U.S.C. 145 or 146, unless the appeal or civil action is 
terminated. The action immediately subsequent to the filing of a 
submission and fee under Sec. 1.114 may be made final only if the 
conditions set forth in MPEP 706.07(b) for making a first action final 
in a continuing application are met.
    Interim Sec. 1.114 did not require that prosecution in an 
application be closed for an applicant to obtain continued examination 
under that section, but only that the Office had mailed at least one of 
an Office action under 35 U.S.C. 132 or a notice of allowance under 35 
U.S.C. 151. There is, however, no benefit (from applicant's 
perspective) to requesting continued examination under Sec. 1.114 if 
prosecution in the application is not closed. Thus, any request for 
continued examination under Sec. 1.114 in an application in which 
prosecution is not closed would probably have been filed in error. In 
addition, the legislative history of 35 U.S.C. 132(b) reveals that its 
continued examination provisions were designed for applications in 
which prosecution was closed. See 145 Cong. Rec. S.14708,

[[Page 50097]]

S.14718 (daily ed. November 17, 1999) (statement of Sen. Lott); see 
also H.R. Rep. No. 106-464 at 128 (1999). Therefore, the Office 
considers it inappropriate to permit (or encourage) applicants to 
request and pay the fee for continued examination under 35 U.S.C. 
132(b) and Sec. 1.114 unless prosecution in the application is closed.
    Section 1.114(b) provides that prosecution in an application is 
closed as used in Sec. 1.114 means that the application is under 
appeal, or that the last Office action is a final action (Sec. 1.113), 
a notice of allowance (Sec. 1.311), or an action that otherwise closes 
prosecution in the application (e.g., an Office action under Ex parte 
Quayle, 1935 Comm'r Dec. 11 (1935)).
    Section 1.114(c) provides that a submission as used in Sec. 1.114 
includes, but is not limited to, an information disclosure statement, 
an amendment to the written description, claims, or drawings, new 
arguments, or new evidence in support of patentability. This definition 
in Sec. 1.114 for ``submission'' is taken from Sec. 1.129(a). Section 
1.114(c) also provides that if reply to an Office action under 35 
U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111. This provision will permit applicants to 
file a submission under Sec. 1.114 containing only an information 
disclosure statement (Secs. 1.97 and 1.98) in an application subject to 
a notice of allowance under 35 U.S.C. 151.
    Section 1.114(d) provides that if an applicant timely files the fee 
set forth in Sec. 1.17(e) and a submission, the Office will withdraw 
the finality of any Office action to which a reply is outstanding and 
the submission will be entered and considered. The phrase ``withdraw 
the finality of any Office action'' includes the withdrawal of the 
finality of a final rejection, as well as the withdrawal of the closing 
of prosecution by an Office action under Ex parte Quayle, 1935 Comm'r 
Dec. 11 (1935), or notice of allowance under 35 U.S.C. 151 (or notice 
of allowability). Section 1.114(d) also provides that if an applicant 
files a request for continued examination under Sec. 1.114 after 
appeal, but prior to a decision on the appeal, it will be treated as a 
request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. Thus, the filing of a request for 
continued examination under Sec. 1.114 in an application containing an 
appeal awaiting decision after appeal will be treated as a withdrawal 
of the appeal by the applicant, regardless of whether the request for 
continued examination under Sec. 1.114 includes the appropriate fee 
(Sec. 1.17(e)) or a submission (Sec. 1.114(c)). Applicants should 
advise the Board of Patent Appeals and Interferences when a request for 
continued examination under Sec. 1.114 is filed in an application 
containing an appeal awaiting decision. Otherwise, the Board of Patent 
Appeals and Interferences may refuse to vacate a decision rendered 
after the filing (but before recognition by the Office) of a request 
for continued examination under Sec. 1.114. Section 1.114(d) also 
provides that an appeal brief or a reply brief (or related papers) will 
not be considered a submission under Sec. 1.114 (discussed above).
    Section 1.114(e) provides that the request for continued 
examination provisions of Sec. 1.114 do not apply to: (1) A provisional 
application; (2) an application for a utility or plant patent filed 
under 35 U.S.C. 111(a) before June 8, 1995; (3) an international 
application filed under 35 U.S.C. 363 before June 8, 1995; (4) an 
application for a design patent; or (5) a patent under reexamination.
    Section 1.116 is amended to add a paragraph (a) that takes into 
account that an applicant's after final amendment options include 
filing a request for continued examination under Sec. 1.114, and to 
redesignate existing paragraphs (a), (b), and (c) as paragraphs (b), 
(c), and (d), respectively.
    Section 1.198 is amended to take into account that an application 
in which an appeal has been decided by the Board of Patent Appeals and 
Interferences may also be reopened under the request for continued 
examination provisions of Sec. 1.114.
    Section 1.312 is amended by clarifying that an amendment under 
Sec. 1.312 (after allowance) must be filed prior to or with payment of 
the issue fee.
    Section 1.313(a) is being amended to provide that it is not 
necessary to file a petition to withdraw an application from issue if a 
request for continued examination under Sec. 1.114 is filed prior to 
payment of the issue fee. If an applicant files a request for continued 
examination under Sec. 1.114 (with the fee and a submission) prior to 
the date the issue fee is due, the applicant need not pay the issue fee 
to avoid abandonment of the application. Applicants are cautioned 
against filing a request for continued examination under Sec. 1.114 
prior to payment of the issue fee and subsequently paying the issue fee 
(before the Office acts on the request for continued examination under 
Sec. 1.114) because doing so may result in issuance of a patent without 
consideration of the request for continued examination under Sec. 1.114 
(if the request for continued examination under Sec. 1.114 is not 
matched with the application before the application is processed into a 
patent).
    Section 1.313(c) is amended to provide that an application may also 
be withdrawn from issue after payment of the issue fee on petition by 
the applicant for consideration of a request for continued examination 
in compliance with Sec. 1.114. This language differs from the language 
of interim Sec. 1.313(c)(2), but the change simply clarifies the 
requirements for an application to be withdrawn from issue under 
Sec. 1.313(c)(2).
    The Office cannot ensure that any petition under Sec. 1.313(c) will 
be acted upon prior to the date of patent grant. See Filing of 
Continuing Applications, Amendments, or Petitions after Payment of 
Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since 
a request for continued examination under Sec. 1.114 (unlike a CPA 
under Sec. 1.53(d)) is not any type of new application filing, the 
Office cannot grant a petition to convert an untimely request for 
continued examination under Sec. 1.114 to a continuing application 
under Sec. 1.53(b). Therefore, applicants are strongly cautioned to 
file any desired request for continued examination under Sec. 1.114 
prior to payment of the issue fee. In addition, applicants considering 
filing a request for continued examination under Sec. 1.114 after 
payment of the issue fee are strongly cautioned to call the Office of 
Petitions to determine whether sufficient time remains before the 
patent issue date to consider (and grant) a petition under 
Sec. 1.313(c) and what steps are needed to ensure that a grantable 
petition under Sec. 1.313(c) is before an appropriate official in the 
Office of Petitions in sufficient time to grant the petition before the 
patent is issued. Finally, applicants filing a request for continued 
examination under Sec. 1.114 after allowance but prior to payment of 
the issue fee are cautioned against subsequently paying the issue fee 
because doing so may result in the prompt issuance of a patent.
    Response to comments: The Office received fifteen written comments 
(from Intellectual Property Organizations, Law Firms, Patent 
Practitioners, and others) in response to the Interim Rule. Comments 
generally in support of a change are not discussed. The comments and 
the Office's responses to those comments (as well as the comments on 
the proposed change to Sec. 1.103 in the Patent Business Goals Notice 
of Proposed Rulemaking) follow:
    Comment 1: One comment suggested that simply applying the basic 
filing fee

[[Page 50098]]

as the fee for continued examination under 35 U.S.C. 132(b) and 
Sec. 1.114 was inappropriate, as the Office does not need to conduct 
any pre-examination processing when an applicant requests continued 
examination under 35 U.S.C. 132(b) and Sec. 1.114.
    Response: The basic filing fee does not recover the Office's costs 
of pre-examination processing and examination of an application; 
rather, this cost is recovered in part by the issue fee and maintenance 
fees. The actual cost to the Office (in the aggregate) of providing the 
examination required by 35 U.S.C. 131 and 132(a) exceeds the basic 
filing fee. Thus, the basic filing fee for a utility application is 
considered an ``appropriate'' fee within the meaning of 35 U.S.C. 
132(b).
    Comment 2: One comment (while acknowledging that the issue was not 
a rulemaking issue) requested that the Office clarify the impact of the 
changes to 35 U.S.C. 119(e) to: (1) Remove the copendency requirement 
for a nonprovisional application to claim the benefit of a provisional 
application; and (2) extend the period of pendency of a provisional 
application if the date that is twelve months after the filing date of 
a provisional application falls on Saturday, Sunday, or a Federal 
holiday within the District of Columbia.
    Response: Prior to enactment of the American Inventors Protection 
Act of 1999, a nonprovisional application claiming the benefit of a 
provisional application under 35 U.S.C. 119(e) must have been: (1) 
Filed not later than within twelve months after the filing date of the 
provisional application; and (2) filed during the pendency of the 
provisional application. Section 4801 of the American Inventors 
Protection Act of 1999 amended 35 U.S.C. 119(e) to eliminate the 
requirement that a nonprovisional application claiming the benefit of a 
provisional application must have been filed during the pendency of the 
provisional application, but did not change the requirement that a 
nonprovisional application claiming the benefit of a provisional 
application be filed not later than within twelve months after the 
filing date of the provisional application.
    The provisions of 35 U.S.C. 21(b) extend the twelve-month period in 
35 U.S.C. 119(e)(1) to the next succeeding secular or business day if 
the last day of that twelve-month period falls on a Saturday, Sunday, 
or Federal holiday. See Dubost v. U.S. Patent and Trademark Office, 777 
F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985), and Ex parte Olah, 
131 USPQ 41, 42-43 (Bd. Pat. App. 1961). The reason for the caveat in 
former Sec. 1.78(a)(3) is that: (1) 35 U.S.C. 119(e)(2) formerly 
required that a nonprovisional application claiming the benefit of a 
provisional application must have been filed during the pendency of the 
provisional application; and (2) 35 U.S.C. 111(b)(5) provides that a 
provisional application will become abandoned twelve months after its 
filing date regardless of what action is taken or fee is paid in such 
provisional application. Thus, the provisions of 35 U.S.C. 21(b) do not 
appear to extend the twelve-month period in 35 U.S.C. 111(b)(5) to the 
next succeeding secular or business day if the last day of that twelve-
month period falls on a Saturday, Sunday, or Federal holiday. The 
American Inventors Protection Act of 1999 amended 35 U.S.C. 119 to: (1) 
Eliminate the requirement that a nonprovisional application claiming 
the benefit of a provisional application must have been filed during 
the pendency of the provisional application (35 U.S.C. 119(e)(2)); and 
(2) extend the twelve-month period in 35 U.S.C. 111(b)(5) to the next 
succeeding secular or business day if the last day of that twelve-month 
period falls on a Saturday, Sunday, or Federal holiday (35 U.S.C. 
119(e)(3)).
    The provision extending the period of pendency of a provisional 
application if the date that is twelve months after the filing date of 
a provisional application falls on Saturday, Sunday, or a Federal 
holiday within the District of Columbia is still relevant 
(notwithstanding the elimination of the requirement that a 
nonprovisional application claiming the benefit of a provisional 
application has been filed during the pendency of the provisional 
application) as Sec. 1.53(c)(3) requires that any request to convert a 
provisional application into a nonprovisional application be filed 
prior to abandonment of the provisional application.
    Comment 3: One comment suggested that the Office provide (as a 
default) that a provisional application is abandoned as of its filing 
date.
    Response: The rules of practice (Sec. 1.138) allow an applicant to 
file a letter of express abandonment in any application (including a 
provisional application). The applicant is in the best position to 
determine whether a provisional application should remain pending until 
twelve months from its filing date or whether it should be abandoned 
(expressly or otherwise) prior to that date. For example, an applicant 
may wish to maintain the pendency of the provisional application so 
that it can be converted under 35 U.S.C. 111(b)(5) and Sec. 1.53(c)(3) 
into a nonprovisional application (Sec. 1.53(c)(3)(i)). Therefore, the 
Office considers it inappropriate to provide for abandonment of a 
provisional application as of its filing date as a default.
    Comment 4: One comment suggested that the Office not require a 
translation of a non-English language provisional application. The 
comment argued that: (1) The patent statute does not permit the Office 
to deny a filing date to a non-English language provisional application 
if a translation is not provided; (2) provisional applications do not 
need to be in English since they are never examined; (3) requiring a 
translation for every non-English language provisional application 
requires more paper handling by the Office; (4) requiring a translation 
in every non-English language provisional application discriminates 
against foreign applicants and discourages foreign applicants from 
filing provisional applications in the United States; and (5) requiring 
a translation in every non-English language provisional application is 
not necessary for national security screening. Another comment 
suggested that the Office not require a translation of a non-English 
language provisional application if the provisional application 
discloses an invention made outside the United States.
    Response: The rules of practice do not require an English language 
translation of a non-English language provisional (or nonprovisional) 
application as a condition of according a filing date to the 
application. The Office has proposed to revise the rules of practice to 
require an English language translation of a non-English language 
provisional application when the benefit of the filing date of the 
provisional application is claimed in a later-filed nonprovisional 
application, and then the English language translation of the 
provisional application will be required to be filed only in the 
nonprovisional application. See Changes to Implement Eighteen-Month 
Publication of Patent Applications, Notice of Proposed Rulemaking, 65 
FR 17946, 17953, 17965 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121, 
127, 137 (Apr. 25, 2000). Since the effective prior art (35 U.S.C. 
102(e)) date of a patent takes claims under 35 U.S.C. 119(e) for the 
benefit of a provisional application's filing date into account, but 
does not take claims under 35 U.S.C. 119(a)-(d) for the benefit of a 
foreign application's filing date into account, the Office has a 
reasonable basis for having different requirements for provisional 
application claims under 35 U.S.C. 119(e) than for foreign application 
claims under 35 U.S.C.

[[Page 50099]]

119(a)-(d). Obviously, if a non-English-language provisional 
application is converted under 35 U.S.C. 111(b)(5) and Sec. 1.53(c)(3) 
into a nonprovisional application, an English language translation will 
be required in the resulting nonprovisional application.
    Comment 5: One comment suggested that Sec. 1.53(c)(3) contain a 
sentence that advises applicants that conversion of a provisional 
application under Sec. 1.53(c)(3) results in a forfeiture of rights 
under 35 U.S.C. 119, and that the term of any patent which issues from 
the application will be measured from the initial filing date of the 
provisional application.
    Response: Section 1.53(c)(3) as adopted will caution applicants 
that conversion of a provisional application to a nonprovisional 
application under Sec. 1.53(c)(3) will result in the term of any patent 
to issue from the application being measured from at least the filing 
date of the provisional application for which conversion is requested. 
Section 1.53(c)(3) will also provide that applicants should consider 
avoiding this adverse patent term impact by filing a nonprovisional 
application claiming the benefit of the provisional application under 
35 U.S.C. 119(e) (rather than converting the provisional application 
into a nonprovisional application pursuant to Sec. 1.53(c)(3)).
    Comment 6: One comment suggested that Sec. 1.53(c)(3) provide that 
upon conversion of a provisional application to a nonprovisional 
application, the nonprovisional application should be accorded a filing 
date as of the date on which a request for conversion of provisional 
application to a nonprovisional application was filed, but that the 
original filing date of the provisional application should be 
preserved. The comment also requested clarification on the order in 
which a nonprovisional application resulting from conversion of a 
provisional application will be taken up for examination.
    Response: If an applicant files a provisional application and 
subsequently requests that the provisional application be converted 
into (or treated as) a nonprovisional application (and that request is 
granted), there remains only a single (now nonprovisional) application. 
For the Office to accord the resulting nonprovisional application a 
filing date as of the date on which a request for conversion of 
provisional application to a nonprovisional application was filed, but 
somehow preserve the original filing date of the provisional 
application, would require the Office to accord two filing dates to a 
single application. There is nothing in the legislative history of 
Sec. 4801 of the American Inventors Protection Act of 1999 indicating 
that Congress intended an application filing scheme under which a 
single application would be both a provisional application with one 
filing date and a nonprovisional application with a different filing 
date. Rather, it appears that Sec. 4801 of the American Inventors 
Protection Act of 1999 simply permits an applicant who previously filed 
a provisional application to have a ``change of heart'' and 
subsequently have the application treated as (or converted to) a 
nonprovisional application. This change also lays to rest the argument 
that a provisional application is not a proper priority application 
under Article 4 of the Paris Convention for the Protection of 
Industrial Property because a provisional application cannot result in 
a U.S. patent (since a provisional application can now be converted 
into a nonprovisional application, which can result in a U.S. patent). 
See 1180 Off. Gaz. Pat. Office 131 (Nov. 28, 1995).
    The Office plans to take up a nonprovisional application resulting 
from conversion of a provisional application for examination based upon 
the filing date of the request for conversion under Sec. 1.53(c)(3) 
(rather than the filing date of the resulting nonprovisional 
application). This will preserve parity among applicants filing a 
nonprovisional application claiming the benefit of an earlier 
provisional application and applicants requesting conversion of a 
provisional application into a nonprovisional application pursuant to 
Sec. 1.53(c)(3).
    Comment 7: One comment suggested that Sec. 1.53(c)(3) be amended to 
provide that if a provisional application does not contain a claim, and 
a claim was not filed with a request to convert the application into a 
nonprovisional application, the Office will notify the applicant and 
set a time period for submitting a claim for examination.
    Response:  The Office does not consider it appropriate to convert a 
provisional application into a nonprovisional application until at 
least one claim is present. Thus, Sec. 1.53(c)(3) requires the presence 
of at least one claim before the Office will grant a request to convert 
a provisional application into a nonprovisional application. If a 
provisional application does not contain a claim, and a claim is not 
filed with a request to convert the application into a nonprovisional 
application, the Office will set a time period within which a claim 
must be submitted for the Office to grant the request to convert the 
provisional application into a nonprovisional application.
    Comment 8: Several comments stated that the twelve-month period 
specified in Sec. 1.53(c)(3)(ii) does not take into account the 
pendency extension provided in Sec. 1.7(b).
    Response:  The twelve-month period set forth in Sec. 1.53(c)(3)(ii) 
concerning when a request to convert a provisional application into a 
nonprovisional application must be filed does not relate to the 
pendency of the provisional application, but the twelve-month period 
within which any nonprovisional application claiming the benefit of 
that provisional application must be filed. See 35 U.S.C. 119(e)(1). As 
discussed above, if the last day of the twelve-month period set forth 
in Sec. 1.53(c)(3)(ii) falls on a Saturday, Sunday, or Federal holiday, 
that period is extended to the next succeeding secular or business day 
by 35 U.S.C. 21(a) (and Sec. 1.7(a)).
    Comment 9: One comment indicated that if an applicant fails to 
timely reply to a Notice to File Missing Parts of Application in a 
provisional application, the Office should permit an applicant to 
revive the provisional application to file the filing fee, surcharge, 
translation, or whatever else is missing from the provisional 
application such that a nonprovisional application may claim the 
benefit of the provisional application under 35 U.S.C. 119(e) and 
Sec. 1.78.
    Response:  Section 1.78(a)(3) requires, for a nonprovisional 
application to claim the benefit of a provisional application, that the 
provisional application filing fee be paid within the period specified 
in Sec. 1.53(g), and that any English language translation be filed 
within the period specified in Sec. 1.52(d). Thus, the grant of a 
petition to revive the provisional application will still not result in 
compliance with Sec. 1.78(a)(3). Rather, the applicant would be 
required to file a petition under Sec. 1.183 showing that circumstances 
of applicant's failure to pay the provisional application filing fee 
within the period specified in Sec. 1.53(g), or failure to file any 
English language translation within the period specified in 
Sec. 1.52(d), constitutes an ``extraordinary situation'' in which 
``justice requires'' a waiver of this requirement of Sec. 1.78(a)(3). 
The Office has proposed revising the rules of practice as to when an 
English language translation of a non-English language provisional is 
required, as well as the condition under which an untimely English 
language translation will be accepted. See Changes to Implement 
Eighteen-Month Publication of Patent

[[Page 50100]]

Applications, 65 FR at 17953, 17965, 1233 Off. Gaz. Pat. Office at 127, 
137.
    Comment 10: Several comments argued that the Office should retain 
CPA practice under Sec. 1.53(d) as to divisional applications, since an 
applicant is not permitted to switch inventions under the request for 
continued examination practice set forth in Sec. 1.114.
    Response:  CPA practice under Sec. 1.53(d) was adopted in December 
of 1997 (during fiscal year 1998). See Changes to Patent Practice and 
Procedure, 62 FR at 53186-87, 1203 Off. Gaz. Pat. Office at 111-12. The 
purpose of CPA practice was to provide a mechanism (via the filing of a 
continuing application) for applicants to obtain further examination of 
an application for a fee (to which the small entity reduction in 35 
U.S.C. 41(h) applies) in the absence of express statutory authority for 
the Office to provide further or continued examination of an 
application for a fee (to which the small entity reduction applies). 
See Changes to Patent Practice and Procedure, 62 FR at 53142, 1203 Off. 
Gaz. Pat. Office at 72. 35 U.S.C. 132(b) now provides express statutory 
authority for the Office to provide further or continued examination of 
an application for a fee (to which the small entity reduction applies). 
Therefore, CPA practice may now be considered a ``transitional 
practice'' relative to the request for continued examination practice 
set forth in 35 U.S.C. 132(b), and the Office is retaining CPA practice 
only as to applications filed before the effective date of request for 
continued examination practice set forth in 35 U.S.C. 132(b) (May 29, 
2000) and design applications.
    Divisional CPAs make up only a small percentage of divisional 
applications or CPAs. In fiscal year 1998, the Office received about 
12,000 divisional applications and about 18,000 CPAs, about 400 of 
which were divisional CPAs. In fiscal year 1999, the Office received 
about 14,000 divisional applications and about 26,000 CPAs, about 300 
of which were divisional CPAs. Thus, divisional CPAs made up about 
three percent of all divisional applications and about two percent of 
all CPAs filed in fiscal year 1998, and made up about two percent of 
all divisional applications and about one percent of all CPAs filed in 
fiscal year 1999.
    Divisional CPAs, however, have a much higher than average frequency 
of filing date petitions (over ten times higher) than other types of 
applications. Almost always, the filing error resulting in the need for 
a filing date petition is that the applicant has filed a divisional 
application as a CPA (usually with a copy of the specification, 
drawings, and oath or declaration from the prior application) when the 
applicant meant to file a divisional application under Sec. 1.53(b). 
The petition to convert the divisional CPA into a divisional 
application under Sec. 1.53(b) usually cannot be granted because it is 
relatively rare that the petition is filed (much less brought before an 
appropriate deciding official) before the prior application is 
abandoned as a result of being processed into a CPA. See Continued 
Prosecution Application (CPA) Practice, Notice, 1214 Off. Gaz. Pat. 
Office 32, 32 (Sept. 8, 1998). In view of the relatively low number of 
divisional CPAs and the frequency of filing errors involving divisional 
CPAs, the divisional CPA has proven itself to be the bane of CPA 
practice. Thus, the elimination of divisional CPA practice appears to 
be a benefit (rather than a drawback) to eliminating CPA practice for 
applications (other than designs) filed on or after May 29, 2000.
    In any event, retaining CPA practice as to ``divisional'' CPAs and 
eliminating it as to ``continuation'' CPAs is not practical. The 
expressions ``continuation,'' ``divisional,'' and ``continuation-in-
part'' are merely terms used for administrative convenience. See 
Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 
556, 32 USPQ2d 1077 (Fed. Cir. 1994). Thus, providing that a CPA must 
be a ``divisional'' CPA rather than a ``continuation'' CPA would be 
meaningless, as it would only require that an applicant filing a CPA 
label the CPA as a ``divisional'' CPA.
    Section 1.53(d)(1) restricts CPA practice to ``continuation'' and 
``divisional'' CPAs (i.e., does not permit continuation-in-part CPAs) 
through the requirement that a CPA disclose and claim only subject 
matter disclosed in the prior application. See Sec. 1.53(d)(2)(ii). 
While Sec. 1.53(d) could be amended to further restrict CPA practice to 
``divisional'' applications that claim only subject matter disclosed 
but not elected for examination in the prior application, such a 
provision would require a restriction-type analysis to determine 
whether a CPA is proper under this revised CPA practice. Retaining CPA 
practice for the few divisional CPAs filed each year does not justify 
the complexity that such a provision would introduce into application 
filing procedures.
    Finally, any utility or plant CPA filed on or after November 29, 
2000, is subject to the eighteen-month publication provisions of the 
American Inventors Protection Act of 1999. The Office's planning 
approach to eighteen-month publication involves obtaining application 
papers (a specification), drawings, an oath or declaration, and any 
sequence listing (if required) necessary for the eighteen-month 
publication process during the pre-examination processing of the 
application in the Office of Initial Patent Examination (OIPE). See 
Changes to Implement Eighteen-Month Publication of Patent Applications, 
Notice of Proposed Rulemaking, 65 FR 17046, 17948-49 (Apr. 5, 2000), 
1233 Off. Gaz. Pat. Office 121, 122-23 (Apr. 25, 2000). Since the 
Office does not conduct any pre-examination processing of a CPA in 
OIPE, the Office's Patent Application Capture and Review (PACR) 
database will probably not have the application papers (a 
specification), drawings, an oath or declaration, and any sequence 
listing (if required) necessary for the eighteen-month publication 
process. Restricting CPA practice to the situation in which the prior 
utility or plant application was filed before May 29, 2000, will limit 
the number of utility or plant CPAs filed on or after November 29, 
2000, each of which will require special handling to obtain the 
application papers (a specification), drawings, an oath or declaration, 
and any sequence listing (if required) necessary for the eighteen-month 
publication process.
    Comment 11: One comment suggested that Sec. 1.97(b) be revised to 
provide that an information disclosure statement will be considered if 
it is filed within three months after the date of a request for 
continued examination under Sec. 1.114.
    Response: Since a request for continued examination is a reply 
under 35 U.S.C. 132, the applicant may be entitled to patent term 
adjustment if the Office does not act on an application containing a 
request for continued examination under Sec. 1.114 within four months. 
See 35 U.S.C. 154(b)(1)(A)(ii). Thus, the Office cannot delay the 
acting on all applications in which a request for continued examination 
under Sec. 1.114 is filed for three months to determine whether an 
information disclosure statement will be filed. The Office, however, is 
adopting provisions (under Sec. 1.103(c)) for a limited suspension of 
action after the filing of a request for continued examination under 
Sec. 1.114, under which an applicant may obtain additional time (prior 
to the issuance of the next Office action) to provide an information 
disclosure statement (or amendments, or an affidavit or declaration) 
after the filing of the request for continued examination.

[[Page 50101]]

    Comment 12: One comment suggested that the Office clarify its 
statement that Sec. 1.103 does not apply to requests for suspension of 
action by the applicant in an application.
    Response: The Office is distinguishing a request from applicant for 
the Office to suspend action by the Office from a request from 
applicant to suspend action by applicant to an outstanding Office 
requirement. Section 1.103 applies only to a request by applicant for 
the Office to suspend action by the Office in an application. Section 
1.103 does not apply to a request by applicant to suspend action 
(reply) by the applicant in an application.
    Comment 13: One comment suggested that the three-month suspension 
period for CPAs should be available simply upon request without any 
associated fee, or a lower CPA filing fee is justified as an offset. 
The comment argued that there is no rational basis for payment of an 
additional fee simply to have the CPA obtain the same benefit of filing 
a preliminary amendment or information disclosure statement (IDS) as an 
application under Sec. 1.53(b) (non-CPA), since the filing fees for 
both are the same.
    Response: The comment is not adopted. Section 1.53(d) (CPA 
practice) was established to provide applicants with a means for 
promptly receiving continued examination of an application under final 
rejection via the filing of a continuing application. The normal 
expectation for a CPA is that a first Office action will issue before 
any preliminary amendment or IDS can be submitted if the preliminary 
amendment or IDS is not already prepared when the CPA is filed. In 
these situations, applicants have relied upon not paying the filing fee 
for the CPA and thereby requiring the Office to mail a Notice to File 
Missing Parts of Application (requiring a payment of a surcharge). 
Section 1.103(b) now permits applicants to avoid the practice of not 
paying the filing fee, and to alert the Office that submission of a 
preliminary amendment or IDS is being contemplated (Sec. 1.103(b) does 
not require a statement of reason for the suspension request or actual 
submission of anything). The processing fee required for a request for 
suspension of action under Sec. 1.103(b) is to recover the costs for: 
(1) Treating the application and the preliminary amendment or IDS 
separately rather than being able to treat them together when the 
application is filed; and (2) for redocketing of the application so 
that a first Office action is delayed.
    Comment 14: One comment questioned the applicability of the 
exclusion in 35 U.S.C. 103(c) if the subject matter and claimed 
invention were jointly owned by two or more companies and subject to 
assignment to both (i.e., whether ``person'' and ``organization'' are 
interpreted as including joint ownership by multiple persons or 
organizations).
    Response: The terms ``person'' and ``organization'' in 35 U.S.C. 
103(c) and Sec. 1.104(a)(5) include the situation in which ownership 
resides in more than one person or organization, provided that the 
applications are owned jointly by the same owners. See MPEP 
706.02(I)(2).
    Comment 15: One comment asked whether the amendment to 
Sec. 1.104(c)(4) applied to applications filed on or after November 29, 
1999.
    Response: The amendment to 35 U.S.C. 103(c) in Sec. 4807 of the 
American Inventors Protection Act of 1999 applies to any application 
for patent filed on or after November 29, 1999. Therefore, the 
corresponding amendment to Sec. 1.104(c)(4) applies to any application 
for patent filed on or after November 29, 1999.
    Comment 16: One comment asked whether a CPA under Sec. 1.53(d) 
filed on or after November 29, 1999, is an application for patent filed 
on or after November 29, 1999, such that the amendment to 35 U.S.C. 
103(c) in Sec. 4807 of the American Inventors Protection Act of 1999 
applies to the CPA.
    Response: A CPA under Sec. 1.53(d) filed on or after November 29, 
1999, is an application for patent filed on or after November 29, 1999 
(regardless of the filing date of the prior application), such that the 
amendment to 35 U.S.C. 103(c) in Sec. 4807 of the American Inventors 
Protection Act of 1999 applies to the CPA.
    Comment 17: One comment suggested that design applications not be 
excluded from the request for continued examination practice set forth 
in Sec. 1.114, which would permit continued prosecution application 
practice (under Sec. 1.53(d)) to be completely phased out within a few 
years.
    Response: Section 4405(b)(2) of the American Inventors Protection 
Act of 1999 excludes design applications from the request for continued 
examination practice set forth in 35 U.S.C. 132(b) and Sec. 1.114.
    Comment 18: Several comments suggested that Sec. 1.114 should 
indicate that the first action after filing a request for continued 
examination may not be a final rejection.
    Response: The first action after the filing of a request for 
continued examination under Sec. 1.114 may be made final, but only if 
the conditions set forth in MPEP 706.07(b) for making a first action 
final in a continuing application are met. This practice (first action 
final practice) denies an applicant the delay inherent in an additional 
Office action in a continuation application, thus compelling the 
applicant to draft claims in a continuation application in view of the 
prosecution history of the parent application (i.e., the rejections and 
prior art of record in the parent application), and thus make a bona 
fide effort to define the issues for appeal or allowance. In re Bogese, 
22 USPQ2d 1821, 1824-25 Comm'r Pat. 1992). The Office's need for 
applicants to make a bona fide effort to define the issues for appeal 
or allowance when filing a request for continued examination under 
Sec. 1.114 remains, notwithstanding the changes to the patent term 
provisions of 35 U.S.C. 154 contained in the Uruguay Round Agreements 
Act (URAA), Pub. L. 103-465, 108 Stat. 4809 (1994).
    Comment 19: One comment stated that under 35 U.S.C. 132(a) an 
applicant is entitled to persist in his or her claim to a patent, with 
or without amendment, and that an applicant is likewise entitled to 
request continued examination under 35 U.S.C. 132(b) ``with or without 
amendment.'' The comment argues that Sec. 1.113 is inconsistent with 35 
U.S.C. 132 in that it requires an applicant to appeal or amend to 
obtain further consideration of the application.
    Response: The second examination (or ``reexamination'') provision 
of 35 U.S.C. 132(a) is implemented in Sec. 1.112, which does not 
require the applicant to amend the application. The continued 
examination provision of 35 U.S.C. 132(b) is implemented in Sec. 1.114, 
which again does not require the applicant to amend the application to 
obtain continued examination (a submission ``includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new 
evidence in support of patentability'').
    Section 1.113 applies to applications under a final rejection or 
action, which occurs after the Office has satisfied its obligation to 
examine (35 U.S.C. 131) and reexamine (35 U.S.C. 132(a)) the 
application. Former and current Sec. 1.113 limits the applicant's after 
final options to appeal from or cancellation of the rejected claims. 
Since the Office is not required by 35 U.S.C. 132 to provide continued 
examination of an application under final rejection or action 
(regardless of whether the applicant amends) unless the applicant

[[Page 50102]]

requests (and pays the fee for) continued examination under 35 U.S.C. 
132(b) and Sec. 1.114, the Office is not required by 35 U.S.C. 132 to 
give applicants after final options other than appeal, cancellation of 
the rejected claims, or continued examination under Sec. 1.114.
    Comment 20: Several comments suggested that Sec. 1.114 provide that 
if a request for continued examination under Sec. 1.114 is accompanied 
by the fee but not a submission, the Office will notify the applicant 
and set a time period within which the deficiency must be corrected. 
One comment also suggested that Sec. 1.114 provide that if a request 
for continued examination under Sec. 1.114 is filed after an 
application is allowed, and is accompanied by the fee but not a 
submission, the Office will notify the applicant and set a time period 
within which the deficiency must be corrected.
    Response: The Office will not suspend action in an application when 
a reply by the applicant is outstanding. 35 U.S.C. 133 requires an 
applicant to ``prosecute the application'' within six months of an 
Office action (or a shorter period as set in the Office action) to 
avoid abandonment of the application. If an applicant files a request 
for continued examination but does not also provide any submission (in 
reply to the prior Office action) within the period for reply to the 
prior Office action, the application is abandoned by operation of law 
(35 U.S.C. 133). Providing a different practice for the relatively few 
applications in which a request for continued examination under 
Sec. 1.114 is filed after a notice of allowance has been issued would 
be a trap for the unwary if relied upon in an application subject to an 
Office action under 35 U.S.C. 132.
    The Office will treat a request for continued examination under 
Sec. 1.114 containing a bona fide submission that is not fully 
responsive to the prior Office action under the practice set forth in 
Sec. 1.135(c). In addition, under the limited suspension of action 
provisions of Sec. 1.103(c), an applicant must still file a request for 
continued examination practice in compliance with Sec. 1.114, but may 
obtain additional time (prior to the issuance of the next Office 
action) to provide an information disclosure statement, amendments, or 
an affidavit or declaration after the filing of the request for 
continued examination.
    Comment 21: Several comments suggest that the Office permit 
applicants to submit an amendment canceling previously examined claims 
and presenting claims to a previously non-elected invention (i.e., 
``switch inventions'') when filing a request for continued examination 
under Sec. 1.114.
    Response: The Office does not consider it appropriate to permit an 
applicant to accumulate patent term adjustment under 35 U.S.C. 154(b) 
on the basis of the examination of a first elected invention and to 
apply that patent term adjustment to a patent on a subsequently elected 
(previously non-elected) invention. If the Office permits applicants to 
submit an amendment canceling previously examined claims and presenting 
claims to a previously non-elected invention when filing a request for 
continued examination under Sec. 1.114, the applicant will be able to 
accumulate patent term adjustment under 35 U.S.C. 154(b) on the basis 
of the examination of a first elected invention and to apply that 
patent term adjustment to a patent on a subsequently elected 
(previously non-elected) invention. Thus, an applicant may not obtain 
examination of a different or non-elected invention (e.g., a 
divisional) in a request for continued examination under Sec. 1.114.
    Comment 22: Several comments suggested that Sec. 1.116 should 
continue to permit entry of an amendment after final rejection upon a 
showing of good and sufficient reasons why the amendment is necessary 
and was not presented earlier.
    Response: Section 1.116(c) permits entry of an amendment after 
final rejection upon a showing of good and sufficient reasons why the 
amendment is necessary and was not presented earlier.
    Comment 23: One comment noted that Sec. 1.85(c) permitted 
applicants to file corrected drawings after payment of the issue fee, 
and questioned how minor amendments to the specification (for 
consistency with the corrected drawings) may be filed after payment of 
the issue fee in view of the changes to Secs. 1.312 and 1.313.
    Response: Section 1.85 will be amended to provide that the three-
month period set in notice of allowability for submission of any 
outstanding corrected or formal drawings is not extendable under 
Sec. 1.136(a) or (b). Thus, any corrected or formal drawings (and 
conforming amendments to the specification) should be submitted on or 
before the date the issue fee is paid.
    Comment 24: One comment suggested that the Office must allow for 
amendments after payment of the issue fee because the Office often does 
not rule on an amendment under Sec. 1.312 submitted prior to payment of 
the issue fee until after the period for payment of the issue fee has 
expired.
    Response: Section 1.312 is not intended to be used for continued 
examination of an application. See MPEP 714.16. Any amendments 
considered necessary by the applicant should be completed before a 
notice of allowance is issued in the application. Applicants should not 
be submitting a series of amendments after issuance of a notice of 
allowance to determine what changes the examiner will permit under 
Sec. 1.312.
    Comment 25: One comment suggested that Sec. 1.313(a) be amended to 
state that an application may be withdrawn from issue prior to payment 
of the issue fee for consideration of a request for continued 
examination under Sec. 1.114. The comment argued that an applicant 
should not be forced to pay the issue fee while waiting to see whether 
an application will be withdrawn from issue to consider a request for 
continued examination under Sec. 1.114.
    Response: Section 1.313(a) is being amended to provide that it is 
not necessary to file a petition to withdraw an application from issue 
if a request for continued examination under Sec. 1.114 is filed prior 
to payment of the issue fee.
    Comment 26: One comment suggested that a grantable petition under 
Sec. 1.313(c) to withdraw an application from issue be considered 
effective on the filing date of the petition, rather than on the date 
an Office official acts on the petition.
    Response: The withdrawal of an application from issue after payment 
of the issue fee is not considered a ministerial act; rather, the 
Office will withdraw an application from issue only when the Office 
determines that the conditions specified in Secs. 1.313(b) or 1.313(c) 
are satisfied. See Harley v. Lehman, 981 F. Supp. 9, 44 USPQ2d 1699 
(D.D.C. 1997). Therefore, the Office does not consider it appropriate 
to consider a petition to withdraw an application from issue after 
payment of the issue fee to be effective on the filing date of the 
petition.

Classification

    Administrative Procedure Act: The changes in this final rule 
concern only the manner by which an applicant obtains continued 
examination of a nonprovisional application, requests conversion of a 
provisional application into a nonprovisional application, or claims 
the benefit of a provisional application, as provided for in Secs. 4403 
and 4801 of the American Inventors Protection Act of 1999 (Title IV of 
S. 1948, incorporated into Pub. L. 106-113). Therefore, prior notice 
and an opportunity for public comment are not required pursuant to 5 
U.S.C. 553(b)(A) (or any other law), and thirty-day

[[Page 50103]]

advance publication is not required pursuant to 5 U.S.C. 553(d) (or any 
other law).
    Regulatory Flexibility Act: As prior notice and an opportunity for 
public comment are not required pursuant to 5 U.S.C. 553 (or any other 
law), the analytical requirements of the Regulatory Flexibility Act (5 
U.S.C. 601 et seq.) are inapplicable.
    Executive Order 13132: This final rule does not contain policies 
with federalism implications sufficient to warrant preparation of a 
Federalism Assessment under Executive Order 13132 (August 4, 1999).
    Executive Order 12866: This final rule has been determined to be 
not significant for purposes of Executive Order 12866 (September 30, 
1993).
    Paperwork Reduction Act: This final rule involves information 
collection requirements which are subject to review by the Office of 
Management and Budget (OMB) under the Paperwork Reduction Act of 1995 
(44 U.S.C. 3501 et seq.). The collections of information involved in 
this final rule have been reviewed and previously approved by OMB under 
the following control numbers: 0651-0031, 0651-0032, and 0651-0033. The 
United States Patent and Trademark Office is not resubmitting 
information collection packages to OMB for its review and approval 
because the changes in this final rule do not affect the information 
collection requirements associated with the information collections 
under these OMB control numbers.
    The title, description, and respondent description of each of the 
information collections are shown below with an estimate of each of the 
annual reporting burdens. Included in each estimate is the time for 
reviewing instructions, gathering and maintaining the data needed, and 
completing and reviewing the collection of information. The principal 
impact of the changes in this final rule is to implement the changes to 
Office practice necessitated by Secs. 4403, 4801, and 4807 of the 
American Inventors Protection Act of 1999.

    OMB Number: 0651-0031.
    Title: Patent Processing (Updating).
    Form Numbers: PTO/SB/08/21-27/30/31/42/43/61/62/63/64/67/68/91/92/
96/97.
    Type of Review: Approved through October of 2002.
    Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal 
Government.
    Estimated Number of Respondents: 2,231,365.
    Estimated Time Per Response: 0.46 hours.
    Estimated Total Annual Burden Hours: 1,018,736 hours.
    Needs and Uses: During the processing of an application for a 
patent, the applicant/agent may be required or desire to submit 
additional information to the United States Patent and Trademark Office 
concerning the examination of a specific application. The specific 
information required or which may be submitted includes: Information 
Disclosure Statements; Terminal Disclaimers; Petitions to Revive; 
Express Abandonments; Appeal Notices; Petitions for Access; Powers to 
Inspect; Certificates of Mailing or Transmission; Statements under 
Sec. 3.73(b); Amendments, Petitions and their Transmittal Letters; and 
Deposit Account Order Forms.

    OMB Number: 0651-0032.
    Title: Initial Patent Application.
    Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
    Type of Review: Approved through October of 2002.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 334,100.
    Estimated Time Per Response: 8.95 hours.
    Estimated Total Annual Burden Hours: 2,990,260 hours.
    Needs and Uses: The purpose of this information collection is to 
permit the United States Patent and Trademark Office to determine 
whether an application meets the criteria set forth in the patent 
statute and regulations. The standard Fee Transmittal form, New Utility 
Patent Application Transmittal form, New Design Patent Application 
Transmittal form, New Plant Patent Application Transmittal form, 
Declaration, and Plant Patent Application Declaration will assist 
applicants in complying with the requirements of the patent statute and 
regulations, and will further assist the United States Patent and 
Trademark Office in processing and examination of the application.

    OMB Number: 0651-0033.
    Title: Post Allowance and Refiling.
    Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
    Type of Review: Approved through September of 2000.
    Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
    Estimated Number of Respondents: 135,250.
    Estimated Time Per Response: 0.325 hour.
    Estimated Total Annual Burden Hours: 43,893 hours.
    Needs and Uses: This collection of information is required to 
administer the patent laws pursuant to title 35, U.S.C., concerning the 
issuance of patents and related actions including correcting errors in 
printed patents, refiling of patent applications, requesting 
reexamination of a patent, and requesting a reissue patent to correct 
an error in a patent. The affected public includes any individual or 
institution whose application for a patent has been allowed or who 
takes action as covered by the applicable rules.

    Comments are invited on: (1) Whether the collection of information 
is necessary for proper performance of the functions of the agency; (2) 
the accuracy of the agency's estimate of the burden; (3) ways to 
enhance the quality, utility, and clarity of the information to be 
collected; and (4) ways to minimize the burden of the collection of 
information to respondents.
    Interested persons are requested to send comments regarding these 
information collections, including suggestions for reducing this 
burden, to Robert J. Spar, Director, Office of Patent Legal 
Administration, United States Patent and Trademark Office, Washington, 
DC 20231, or to the Office of Information and Regulatory Affairs, OMB, 
725 17th Street, NW., Washington, DC 20503, (Attn: Desk Officer for the 
United States Patent and Trademark Office).
    Notwithstanding any other provision of law, no person is required 
to respond to nor shall a person be subject to a penalty for failure to 
comply with a collection of information subject to the requirements of 
the Paperwork Reduction Act unless that collection of information 
displays a currently valid OMB control number.

List of Subjects in 37 CFR Part 1

    Administrative practice and procedure, Courts, Freedom of 
information, Inventions and patents, Reporting and recordkeeping 
requirements, Small businesses.
    For the reasons set forth in the preamble, the interim rule 
amending 37 CFR Part 1 which was published at 65 FR 14865-14873 on 
March 20, 2000, is adopted as final with the following changes:

[[Page 50104]]

PART 1--RULES OF PRACTICE IN PATENT CASES

    1. The authority citation for 37 CFR Part 1 continues to read as 
follows:

    Authority: 35 U.S.C. 2(b)(2).

    2. Section 1.53 is amended by revising paragraph (c)(3) to read as 
follows:


Sec. 1.53  Application number, filing date, and completion of 
application.

* * * * *
    (c) * * *
    (3) A provisional application filed under paragraph (c) of this 
section may be converted to a nonprovisional application filed under 
paragraph (b) of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional 
application to a nonprovisional application will not result in either 
the refund of any fee properly paid in the provisional application or 
the application of any such fee to the filing fee, or any other fee, 
for the nonprovisional application. Conversion of a provisional 
application to a nonprovisional application under this paragraph will 
result in the term of any patent to issue from the application being 
measured from at least the filing date of the provisional application 
for which conversion is requested. Thus, applicants should consider 
avoiding this adverse patent term impact by filing a nonprovisional 
application claiming the benefit of the provisional application under 
35 U.S.C. 119(e) (rather than converting the provisional application 
into a nonprovisional application pursuant to this paragraph). A 
request to convert a provisional application to a nonprovisional 
application must be accompanied by the fee set forth in Sec. 1.17(i) 
and an amendment including at least one claim as prescribed by the 
second paragraph of 35 U.S.C. 112, unless the provisional application 
under paragraph (c) of this section otherwise contains at least one 
claim as prescribed by the second paragraph of 35 U.S.C. 112. The 
nonprovisional application resulting from conversion of a provisional 
application must also include the filing fee for a nonprovisional 
application, an oath or declaration by the applicant pursuant to 
Secs. 1.63, 1.162, or 1.175, and the surcharge required by Sec. 1.16(e) 
if either the basic filing fee for a nonprovisional application or the 
oath or declaration was not present on the filing date accorded the 
resulting nonprovisional application (i.e., the filing date of the 
original provisional application). A request to convert a provisional 
application to a nonprovisional application must also be filed prior to 
the earliest of:
    (i) Abandonment of the provisional application filed under 
paragraph (c) of this section; or
    (ii) Expiration of twelve months after the filing date of the 
provisional application filed under this paragraph (c).
* * * * *
    3. Section 1.103 is revised to read as follows:


Sec. 1.103  Suspension of action by the Office.

    (a) Suspension for cause. On request of the applicant, the Office 
may grant a suspension of action by the Office under this paragraph for 
good and sufficient cause. The Office will not suspend action if a 
reply by applicant to an Office action is outstanding. Any petition for 
suspension of action under this paragraph must specify a period of 
suspension not exceeding six months. Any petition for suspension of 
action under this paragraph must also include:
    (1) A showing of good and sufficient cause for suspension of 
action; and
    (2) The fee set forth in Sec. 1.17(h), unless such cause is the 
fault of the Office.
    (b) Limited suspension of action in a continued prosecution 
application (CPA) filed under Sec. 1.53(d). On request of the 
applicant, the Office may grant a suspension of action by the Office 
under this paragraph in a continued prosecution application filed under 
Sec. 1.53(d) for a period not exceeding three months. Any request for 
suspension of action under this paragraph must be filed with the 
request for an application filed under Sec. 1.53(d), specify the period 
of suspension, and include the processing fee set forth in 
Sec. 1.17(i).
    (c) Limited suspension of action after a request for continued 
examination (RCE) under Sec. 1.114. On request of the applicant, the 
Office may grant a suspension of action by the Office under this 
paragraph after the filing of a request for continued examination in 
compliance with Sec. 1.114 for a period not exceeding three months. Any 
request for suspension of action under this paragraph must be filed 
with the request for continued examination under Sec. 1.114, specify 
the period of suspension, and include the processing fee set forth in 
Sec. 1.17(i).
    (d) Notice of suspension on initiative of the Office. The Office 
will notify applicant if the Office suspends action by the Office on an 
application on its own initiative.
    (e) Suspension of action for public safety or defense. The Office 
may suspend action by the Office by order of the Commissioner if the 
following conditions are met:
    (1) The application is owned by the United States;
    (2) Publication of the invention may be detrimental to the public 
safety or defense; and
    (3) The appropriate department or agency requests such suspension.
    (f) Statutory invention registration. The Office will suspend 
action by the Office for the entire pendency of an application if the 
Office has accepted a request to publish a statutory invention 
registration in the application, except for purposes relating to patent 
interference proceedings under Subpart E of this part.
    4. Section 1.114 is revised to read as follows:


Sec. 1.114  Request for continued examination.

    (a) If prosecution in an application is closed, an applicant may 
request continued examination of the application by filing a submission 
and the fee set forth in Sec. 1.17(e) prior to the earliest of:
    (1) Payment of the issue fee, unless a petition under Sec. 1.313 is 
granted;
    (2) Abandonment of the application; or
    (3) The filing of a notice of appeal to the U.S. Court of Appeals 
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a 
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated.
    (b) Prosecution in an application is closed as used in this section 
means that the application is under appeal, or that the last Office 
action is a final action (Sec. 1.113), a notice of allowance 
(Sec. 1.311), or an action that otherwise closes prosecution in the 
application.
    (c) A submission as used in this section includes, but is not 
limited to, an information disclosure statement, an amendment to the 
written description, claims, or drawings, new arguments, or new 
evidence in support of patentability. If reply to an Office action 
under 35 U.S.C. 132 is outstanding, the submission must meet the reply 
requirements of Sec. 1.111.
    (d) If an applicant timely files a submission and fee set forth in 
Sec. 1.17(e), the Office will withdraw the finality of any Office 
action and the submission will be entered and considered. If an 
applicant files a request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it will be treated 
as a request to withdraw the appeal and to reopen prosecution of the 
application before the examiner. An appeal brief under Sec. 1.192 or a 
reply brief under Sec. 1.193(b), or

[[Page 50105]]

related papers, will not be considered a submission under this section.
    (e) The provisions of this section do not apply to:
    (1) A provisional application;
    (2) An application for a utility or plant patent filed under 35 
U.S.C. 111(a) before June 8, 1995;
    (3) An international application filed under 35 U.S.C. 363 before 
June 8, 1995;
    (4) An application for a design patent; or
    (5) A patent under reexamination.
    5. Section 1.313 is amended by revising paragraphs (a) and (c)(2) 
to read as follows:


Sec. 1.313  Withdrawal from issue.

    (a) Applications may be withdrawn from issue for further action at 
the initiative of the Office or upon petition by the applicant. To 
request that the Office withdraw an application from issue, applicant 
must file a petition under this section including the fee set forth in 
Sec. 1.17(h) and a showing of good and sufficient reasons why 
withdrawal of the application from issue is necessary. A petition under 
this section is not required if a request for continued examination 
under Sec. 1.114 is filed prior to payment of the issue fee. If the 
Office withdraws the application from issue, the Office will issue a 
new notice of allowance if the Office again allows the application.
* * * * *
    (c) * * *
    (2) Consideration of a request for continued examination in 
compliance with Sec. 1.114; or
* * * * *

    Dated: August 9, 2000.
Q. Todd Dickinson,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 00-20744 Filed 8-15-00; 8:45 am]
BILLING CODE 3510-16-P